knowledge 19 October 2021 |

New Intellectual Property and Technology List on the way

The Review Group, chaired by Mr Justice Peter Kelly, established to review the administration of civil justice in Ireland published its report in late 2020. The report (available here) made a variety of recommendations in relation to civil justice reform in Ireland.

In particular, the Review Group recommended the establishment of a dedicated list, as an adjunct to the Commercial Court, to hear and determine intellectual property disputes and disputes concerning technology. In doing so, the Review Group recognised the benefits that were likely to result from the introduction of a specialised intellectual property list. This recommendation has now been implemented.

Amendments to Order 63A

Order 63A RSC, which governs the Commercial Court, has been amended so that, if “intellectual property proceedings” or proceedings involving issues of “technological complexity in any field of industry” appear in the Commercial Court list, the judge can assign them to the new Intellectual Property and Technology List. This is a sub-division of the Commercial List.

What proceedings will appear in the new Intellectual Property and Technology List?

In relation to the first branch of the new list, Order 63A defines “intellectual property proceedings” as any proceedings instituted, application made or appeal lodged under the following legislation or instruments, or concerned with the licensing of rights protected under them:

• Trade Marks Act 1996;
• Regulation (EU) No 2017/1001 on the European Union trade mark;
• Copyright and Related Rights Act 2000;
• Patents Act 1992;¹
• Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products;
• Industrial Designs Act 2001;
• Council Regulation (EC) No 6/2002 on Community designs;
• Council Regulation (EC) No 2100/94 on Community plant variety rights;
• European Union (Protection of Trade Secrets) Regulations 2018.

Also included are proceedings for relief in respect of unregistered intellectual property rights; to prevent passing off; to prevent unfair commercial practices; and in respect of a right of confidence in information.

In relation to the second branch of the new list, there is no further guidance in the rules as to what level of “technological complexity” will merit entry into the list. This should become clearer over the coming months as new list begins to operate. However, what is clear, is that there is no exhaustive list of entry categories here and the court has been given a wide-ranging discretion in this regard.

Finally, Order 63A is also amended to include dedicated and detailed pre-trial procedures for proceedings listed in the Intellectual Property and Technology List.

These procedures include a case management conference after close of pleadings (unless otherwise directed) to ensure that the case proceeds to trial in a manner which is just and proportionate, expeditious and likely to minimise costs.  The case management conference is to address matters such as whether there is a need for further particulars, discovery, inspection or experiments, a modular trial or an assessor and the time likely to be required by the trial judge for advance reading.  The judge can direct that the proceedings be heard on affidavit or heard on affidavit with oral evidence on a specific issue(s) and/or be determined without discovery or with limited discovery.

Amendments to Order 94

Order 94 RSC sets out the rules more generally in relation to intellectual property proceedings. Most of the current provision has been in situ since 1986 and was in need of an update. This has now been done. The rules, as amended, take account of legislative developments at both national and European level and deal with issues such as the initiation of proceedings, service and remedies as well as the more specialised procedural steps that are characteristic of intellectual property actions.  Some new features of particular relevance to patent proceedings are:

• The Court may direct the preparation of a technical primer (document setting out basic undisputed technology); 
• If validity of a patent is challenged on obviousness grounds, a party seeking to rely on the commercial success of the patent has to plead the grounds on which they so rely. It may not be necessary for that party to make discovery related to the issue of commercial success where certain commercial information is provided and verified on affidavit;  
• Where a party delivers a Product or Process Description, it may not have to make discovery of documents relating to the features of the product or process concerned;
• Where facts are sought to be established by experimental proof, specific new procedures for Notices of Experiments will apply;
• Provision is made for orders limiting of inspection of documents containing confidential information, facilitating "confidentiality club" arrangements.  

Comment

These new rules come into operation on 22 October 2021 (for proceedings commenced after that date) and will be welcomed by clients and practitioners alike. They bring much needed updates and reform and should provide for more efficient disposal of intellectual property and technology disputes before the Irish courts. The various procedural reforms that are specifically applicable to patent proceedings are particularly welcome and should have a significant positive impact on the efficient conduct of such proceedings.